13
Capability of distinguishing requisite for registration in Part B
(1) In order to be registrable in Part B of the Register, a trade mark shall be capable,
in relation to the goods or services in respect of which it is proposed to be registered,
of distinguishing goods or services with which the proprietor of the trade mark is or
may be connected in the course of trade from goods or services in the case of which
no such connection subsists, either generally or, where the trade mark is proposed to
be registered subject to limitations, in relation to use within the extent of the
registration.
(2) In determining whether a trade mark is capable of distinguishing as mentioned in
subsection (1), the Registrar may have regard to the extent to which, by reason of the
use of the trade mark or of any other circumstances, the trade mark is in fact capable
of so distinguishing or is capable of becoming distinctive as referred to in section
twelve.
(3) Where—
(a)
an application has been made for the registration of a trade mark in
Part B of the Register; and
(b)
before the date of the application the trade mark was used by a person
other than the applicant in the circumstances referred to in paragraph (b) of
subsection (4) of section twelve; and
(c)
an application has been made by the applicant and that other person
for the registration of that other person as a registered user of the trade mark; and
(d)
the Registrar is satisfied that that other person would be entitled to be
registered as a registered user of the trade mark immediately after the registration of
the trade mark;
the Registrar may, for the purpose of determining whether the trade mark is capable
of distinguishing as mentioned in subsection (1) the goods or services of the
applicant, treat the use of the trade mark by that other person as equivalent to use of
the trade mark by the applicant.
(4) A trade mark may be registered in Part B of the Register notwithstanding any
registration in Part A of the Register in the name of the same proprietor of the same
trade mark or any part or parts thereof.
(5) Notwithstanding anything to the contrary contained in this section, a
distinguishing guise shall not be registrable in Part B of the Register.
(6) An appeal shall lie from any decision of the Registrar under this section.
14
Prohibition of registration or maintenance of registration of deceptive, etc.,
matter
(1) A mark—
(a)
the use of which would be likely to deceive or cause confusion; or
(b)
the use of which would be contrary to law; or
(c)
which comprises or contains scandalous matter; or
(d)
which is prescribed to be a prohibited mark; or
(e)
which, for any other reason, would not be entitled to protection in a
court of law;
shall not be registered as a trade mark.
(2) It shall not be lawful to maintain the registration of a trade mark which, through
fault or neglect on the part of the registered proprietor or his assignee, has become
one which is likely to deceive or cause confusion or which, for any other reason,
would not be entitled to protection in a court of law.
(3) Where, in the opinion of the Registrar, a trade mark will in use be likely to
deceive or cause confusion as to the character or quality of some, but not all, of the
goods or services included in the appropriate classification referred to in section
seven, the Registrar may, notwithstanding subsection (1) of section thirty-one, upon
receipt of an undertaking by the proprietor of the trade mark that he will limit the use
of the trade mark to goods or services in relation to which such use will, in the
opinion of the Registrar, not be likely to deceive or cause confusion, register the trade